A precedential decision by the U.S. Court of Appeals for the Federal Circuit in Kroy IP Holdings LLC v. Groupon Inc. has significantly narrowed the scope of inter partes review (IPR) estoppel. This ruling means that a final IPR decision on certain patent claims cannot prevent a patent owner from asserting other, unadjudicated claims in district court litigation, even if those claims are deemed 'immaterially different'.
The decision places increased pressure on IPR petitioners to challenge a broader range of claims, potentially increasing the complexity and cost of IPR petitions due to word limits and additional filing fees. Petitioners may need to file multiple IPRs or conduct more comprehensive early case assessments to mitigate risks.
For patent owners like Groupon, this ruling offers new strategic options for timing their patent enforcement investigations and actions. They may choose to initiate litigation with a focused set of claims and later amend complaints or bring new actions with different claims, potentially after the one-year IPR deadline, thereby precluding IPR challenges on those later-asserted claims.
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